Appeal No. 1998-2288
Application 08/600,150
how a dye could be a substance which could be colored with a
pigment (Answer, page 6).
Appellants argue that the scope of the term “dye” is well
known to one of ordinary skill in the art and the dye is
merely combined with a specified mixed metal oxide to form the
claimed mixture (Brief, page 12).
The initial burden of presenting a prima facie case of
unpatentability rests with the examiner. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner has not established that any term or language
recited in the claims fails to apprise those of ordinary skill
in the art of its scope (see the Answer, page 6). The
examiner has not alleged or established that the scope of the
term “dye” is unclear or unknown to those of ordinary skill in
the art. Any question of how the mixed metal oxide pigment
can be combined with a dye would come under the enablement
requirement of section 112, first paragraph. However, the
examiner has also not met the initial burden of presenting a
prima facie case of unpatentability for this requirement of
section 112.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007